UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Nissan North America, Inc. and Nissan Motor Co., Ltd.,
`Petitioners
`
`v.
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,155,342
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1-100, ET SEQ.
`
`Blitzsafe Texas, LLC,
`Patent Owner
`
`U.S. Patent No. 8,155,342
`Filing Date: June 27, 2006
`Issue Date: April 10, 2012
`Title: Multimedia Device Integration System
`
`Inter Partes Review No.: (Unassigned)
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`V.
`
`
`INTRODUCTION ....................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R ............................................ 1
`A.
`REAL PARTY-IN-INTEREST UNDER 37 C.F.R ............................ 1
`B.
`RELATED MATTERS UNDER 37 C.F.R ........................................ 1
`C.
`LEAD AND BACK-UP COUNSEL .................................................. 2
`D.
`SERVICE INFORMATION .............................................................. 3
`III. PAYMENT OF FEES — 37 C.F.R .............................................................. 3
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R ......................................... 3
`A. Grounds for Standing Under 37 C.F.R ............................................... 3
`B.
`Prior Art Patents and Printed Publications ......................................... 3
`C.
`Identification of Challenge Under 37 C.F.R ....................................... 4
`SUMMARY OF THE ’342 PATENT .......................................................... 5
`A.
`Brief Description ............................................................................... 5
`B.
`Summary of the Prosecution History of the ’342 patent ..................... 6
`VI. CLAIM CONSTRUCTION ......................................................................... 8
`VII. EFFECTIVE FILING DATE OF ’342 PATENT ....................................... 15
`VIII. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`CLAIMS 49-57, 62-64, 66, 68, 70, 71, 73-80, 94, 95, 97, 99-103, 106,
`109-111, 113, 115, AND 120 OF THE ‘342 PATENT ARE
`UNPATENTABLE .................................................................................... 22
`A. Grounds 1-3: Clayton ...................................................................... 22
`1.
`Ground 1: Claims 49-55, 57, 62-64, 71, 73-80, 95, 97,
`99-103, 109-111, and 120 are obvious under 35 U.S.C .......... 22
`Ground 2: Claims 49-57, 62-64, 66, 70, 71, 73-80, 94,
`95, 97, 99-103, 106, 109-111, 113, and 120 are obvious
`under 35 U.S.C ...................................................................... 47
`Ground 3: Claims 68 and 115 are obvious under 35
`U.S.C ..................................................................................... 54
`IX. CONCLUSION ......................................................................................... 55
`
`2.
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`3.
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`

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`
`
`Exhibit
`1001
`1002
`1003
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`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`1011
`1012
`1013
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`1014
`1015
`1016
`1017
`
`1018
`1019
`1020
`1021
`1022
`1023
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`
`
`
`EXHIBITS
`
`Description
`U.S. Patent No. 8,155,342 (“the ’342 patent”)
`U.S. Patent Application Publication No. 2006/0181963 (“Clayton”)
`U.S. Provisional Application No.
`60/651,963
`(“Clayton
`Provisional”)
`U.S. Patent No. 6,559,773 (“Berry”)
`U.S. Patent Application Publication No. 2003/0215102 (“Marlowe”)
`U.S. Patent No. 6,421,305 (“Gioscia”)
`Claim Construction Ruling in Marlowe Patent Holdings LLC v.
`DICE Electronics, LLC et al., 3:10-cv-01199 (D. NJ) and Marlowe
`Patent Holdings LLC v. Ford Motor Company, 3:10-cv-07044 (D.
`NJ)
`U.S. Patent Application No. 11/475,847 (“the ’847 application”)
`U.S. Patent Application No. 11/071,667 (“the ’667 application”)
`U.S. Patent Application No. 10/732,909 (“the ’909 application”)
`U.S. Patent Application No. 10/316,961 (“the ’961 application”)
`Highlighted ’342 Patent (Showing the New Matter)
`Plaintiff’s Disclosure of Asserted Claims and Infringement
`Contentions, served in Blitzsafe Texas, LLC v. Toyota Motor Corp.
`et al., 2:15-cv-01277 (E.D. TX)
`File History of the ’342 Patent
`1999 ID3v2.3 Metadata Standard (1999)
`Declaration of Dr. Thomas Matheson
`Canadian Patent Application Publication No. CA 2347648
`(“Kandler”)
`International Publication No. WO 01/67266 A1 (“Lau”)
`U.S. Patent Application Publication No. 2001/0028717 (“Ohmura”)
`Bluetooth ESDP for UPnP (2001)
`Universal Plug and Play Device Architecture (2000)
`IPR2016-00118, Paper 19 (“IPR ’118”)
`IPR2016-00418, Paper 13 (“IPR ’418”)
`
`ii
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`

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`
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`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioners Nissan
`
`North America, Inc. (“NNA”) and Nissan Motor Co., Ltd. (“NML”) (collectively
`
`“Petitioners”) respectfully request Inter Partes Review of claims 49-57, 62-64, 66,
`
`68, 70, 71, 73-80, 94, 95, 97, 99-103, 106, 109- 111, 113, 115, and 120 of U.S.
`
`Patent No. 8,155,342 (Ex. 1001, “the ’342 patent”), which was filed on June 27,
`
`2006 and issued on April 10, 2012 to Ira Marlowe, and is currently assigned to
`
`Blitzsafe Texas, LLC. (“Blitzsafe” or “Patent Owner”) according to the U.S. Patent
`
`and Trademark Office assignment records. There is a reasonable likelihood that
`
`Petitioner will prevail with respect to at least one of the claims challenged in this
`
`Petition.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
`Nissan North America, Inc. (“NNA”) and Nissan Motor Co., Ltd. (“NML”)
`
`(collectively, “Petitioners”) are the real parties-in-interest.
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
`The ’342 patent is subject to the following pending actions: Blitzsafe Texas,
`
`LLC v. Nissan Motor Co., Ltd. et al., 2:15-cv-01276, July 16, 2015 (E.D. TX);
`
`Blitzsafe Texas, LLC v. Toyota Motor Corp. et al., 2:15-cv-01277, July 16, 2015
`
`(E.D. TX); Blitzsafe Texas, LLC v. Volkswagen Group of Am., Inc. et al., 2:15-cv-
`
`01278, July 16, 2015 (E.D. TX); Blitzsafe Texas, LLC v. Hyundai Motor Co. et al.,
`
`
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`

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`
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`2:15-cv-01275, July 16, 2015 (E.D. TX); Blitzsafe Texas, LLC v. Honda Motor
`
`Co., Ltd. et al., 2:15-cv-01274, July 16, 2015 (E.D. TX); IPR2016-00118,
`
`IPR2016-00418 and IPR2016-00419.
`
`U.S. Patent No. 7,489,786 (the “’786 patent”), a parent patent to the '342
`
`patent, is also at issue in the above-listed district court cases, and was previously
`
`the subject of the following litigations: Marlowe Patent Holdings LLC v. DICE
`
`Electronics, LLC et al., 3:10-cv-01199 (D. NJ); and Marlowe Patent Holdings LLC
`
`v. Ford Motor Company, 3:10-cv-07044 (D. NJ). Both of these cases settled by
`
`June 2015. In addition, claims of the ’786 patent are presently undergoing inter
`
`partes review in Case No. IPR2015-00421.
`
`C. LEAD AND BACK-UP COUNSEL
`Lead counsel is Sean N. Hsu, Reg. No. 69,477, of Hartline Dacus Barger
`
`Dreyer LLP, 8750 N. Central Expwy., Suite 1600; Dallas, TX 75231;
`
`shsu@hdbdlaw.com, 214-346-3765 (phone), 214-267-4265 (fax). Backup counsel
`
`is Jeffrey S. Patterson of Hartline Dacus Barger Dreyer LLP, 8750 N. Central
`
`Expwy., Suite 1600; Dallas, TX 75231; jpatterson@hdbdlaw.com, 214-346-3701
`
`(phone), 214-267-4201 (fax), and a motion for admission pro hac vice in this
`
`proceeding will be filed upon authorization from the Board.
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`2
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`SERVICE INFORMATION
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`D.
`Service information for lead and back-up counsel is provided in the
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`designation of lead and back-up counsel above.
`
`III. PAYMENT OF FEES — 37 C.F.R. § 42.103
`In accordance with 37 C.F.R. §42.15 and 37 C.F.R. §42.103, Petitioners are
`
`providing payment concurrent with the filing of this Petition.
`
`IV. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §§ 42.104
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ‘342 patent (Ex. 1001) is available for Inter
`
`Partes Review and that Petitioner is not barred or estopped from requesting an
`
`Inter Partes Review challenging the patent claims on the grounds identified in this
`
`Petition.
`
`Prior Art Patents and Printed Publications
`
`B.
`U.S. Patent Application Publication No. 2006/0181963 (“Clayton”) (Ex.
`
`1002) claims the benefit of U.S. Provisional Application Nos. 60/651,959,
`
`60/651,958, 60/651,960, 60/651,961, and 60/651,963, all filed on February 11,
`
`2005. Thus, it qualifies as prior art under at least 35 U.S.C. § 102(e). The
`
`provisional applications contain similar material, and U.S. Provisional Application
`
`No. 60/651,963 is attached as Ex. 1003. Throughout this Petition, Clayton is cited
`
`with reference to Ex. 1002 as well as its provisional application (Ex. 1003) to
`
`
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`3
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`

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`
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`establish that Clayton as applied herein is entitled to an earliest effective filing date
`
`of February 11, 2005, i.e., the filing date of the provisional applications.
`
`U.S. Patent No. 6,559,773 (“Berry”) (Ex. 1004) published on May 6, 2003,
`
`and was filed on December 21, 1999. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b), or in the alternative, 35 U.S.C. § 102(a) or (e).
`
`U.S. Patent Application Publication No. 2003/0215102 (“Marlowe”) (Ex.
`
`1005) published on November 20, 2003. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b).
`
`U.S. Patent No. 6,421,305 (“Gioscia”) (Ex. 1006) was filed on November
`
`13, 1998 and published on July 16, 2002. Thus, it qualifies as prior art under 35
`
`U.S.C. § 102(b) , or in the alternative, 35 U.S.C. § 102(a) or (e).
`
`C.
`
`Identification of Challenge Under 37 C.F.R. § 42.104(b) and Relief
`Requested
`
`Petitioner requests Inter Partes Review of claims 49-57, 62-64, 66, 68, 70,
`
`71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113, 115, and 120 of the ‘342 Patent
`
`(Ex. 1001) on the grounds set forth in the tables below and requests that each of the
`
`claims be found unpatentable. An explanation of how claims 49-57, 62-64, 66, 68,
`
`70, 71, 73-80, 94, 95, 97, 99-103, 106, 109-111, 113, 115, and 120 are
`
`unpatentable under the statutory grounds identified below, including the
`
`identification of where each element is found in the prior art references and the
`
`relevance of each of the prior art references, is provided in the form of detailed
`
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`4
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`
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`claim charts. Additional explanation and support for each ground of rejection is
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`set forth in the Declaration of Dr. Thomas Matheson (Ex. 1016).
`
`’342 Patent Claim Basis for Rejection
`Ground
`Ground 1 Claims 49-55, 57,
`Obvious under 35 U.S.C. §103(a) by Clayton
`62-64, 71, 73-80,
`(Ex. 1002) in view of Berry (Ex. 1004)
`95, 97, 99-103, 109-
`111, and 120
`Ground 2 Claims 49-57, 62-
`64, 66, 70, 71, 73-
`80, 94, 95, 97, 99-
`103, 106, 109-111,
`113, and 120
`Ground 3 Claims 68 and 115 Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004),
`Marlowe (Ex. 1005) and Gioscia (Ex. 1006)
`
`Obvious under 35 U.S.C. §103(a) by Clayton
`(Ex. 1002) in view of Berry (Ex. 1004) and
`Marlowe (Ex. 1005)
`
`V.
`
`SUMMARY OF THE ’342 PATENT
`A. Brief Description
`The ’342 patent is directed to a multimedia device integration system that
`
`controls a portable device from a car audio/video system via an “integration
`
`subsystem.” See Ex. 1001 at Abstract; Ex. 1016 at ¶ 46. The ’342 patent claims
`
`are directed to certain embodiments where wireless integration is provided
`
`between a car audio/video system and a portable audio/video device via the
`
`integration subsystem. See Ex. 1014 (‘342 Patent File History) at p. 732,
`
`Amendment 1.111 filed on Nov. 30, 2009; Ex. 1016 at ¶¶ 50-57.
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`5
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`The integration subsystem is positioned within the portable device or within
`
`
`
`the car audio/video system to integrate the two devices, as shown in FIGS. 18 and
`
`19 reproduced below. See id.; see also Ex. 1001 at FIGS. 18 and 19 and 33:43-
`
`35:32. Ex. 1016 at ¶¶ 46-49.
`
`Summary of the Prosecution History of the ‘342 patent
`
`B.
`The application that issued as the ’342 patent was filed on June 27, 2006
`
`with 91 claims. Ex. 1014 at pp. 85-104.
`
`In response to the first Non-Final Office Action issued on May 28, 2009, the
`
`Applicant filed an Amendment on November 30, 2009 canceling original claims 1-
`
`91 and adding new claims 92-212. Id. at pp. 702-737. In the remarks, the
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`Applicant noted that “new claims 92-212 are directed to a multimedia device
`
`integration system which allows for wireless integration of a portable device with a
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`6
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`car audio/video system.” See id. at p. 732, Amendment 1.111, filed on Nov. 30,
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`2009.
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`With this Amendment, the Applicant argued that the primary reference cited,
`
`Coon (U.S. Patent No. 6,539,358), disclosed a voice-interactive docking station for
`
`a portable computer device, and failed to disclose an integration subsystem that
`
`obtains information about an audio/visual file. See id. at p. 734.
`
`In a later Office Action issued on February 15, 2011, the Examiner rejected
`
`all the claims primarily in view of Tranchina (US 7,493,645). See id. at pp. 882-
`
`909, Office Action, issued Feb. 15, 2011. In a 1.111 Amendment filed on Aug. 15,
`
`2011, the Applicant argued that Tranchina lacks a system which instructs a
`
`portable device to play an audio file in response to a user selecting the audio file
`
`from controls of the car audio/visual system. See id. at p. 937, Amendment 1.111,
`
`filed on Aug. 15, 2011. Further, in a 1.116 Amendment filed on January 29, 2012
`
`in response to a Final Office Action in which Tranchina was still applied, the
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`Applicant distinguished over Tranchina by arguing that the claimed integration
`
`subsystem is wirelessly connected to a car audio/video system. The Applicant
`
`submitted this argument despite the fact that most of the claims do not recite or
`
`require such a wireless communication between the integration subsystem and a
`
`car audio/video system. See id. at pp. 1039-1042, Amendment 1.116, filed on Jan.
`
`29, 2012; Ex. 1016 at ¶¶ 61-62.
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`7
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`On February 16, 2012, the Examiner issued a Notice of Allowance, without
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`an indication of a reason for allowance. See id. at pp. 1079-1083, Notice of
`
`Allowance, issued Feb. 16, 2012.
`
`VI. CLAIM CONSTRUCTION1
`A claim subject to Inter Partes Review is given its “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” (37
`
`C.F.R. § 42.100(b).) This means that the words of the claim are given their plain
`
`meaning from the perspective of one of ordinary skill in the art unless that meaning
`
`is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
`
`1989).
`
`“Means-plus-function” limitations are construed in accordance with 35
`
`U.S.C. § 112, 6th paragraph. A claim element that does not recite the term “means”
`
`will invoke 35 U.S.C. § 112, 6th paragraph if the claim element “fails to ‘recite
`
`sufficiently definite structure’ or else recites ‘function without reciting structure for
`
`performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`
`1349 (Fed. Cir. 2015), citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir.
`
`2000).
`
`
`1 Petitioners recognize that a Panel of the PTAB has previously construed certain terms in of the ’342 patent. See,
`e.g., Ex. 1022 (IPR2016-00118), Paper 19, and Ex. 1023 (IPR2016-00418, Paper 13). In particular, the following
`terms were construed by the Panel: “integration subsystem,” Ex. 1022 at 11; Ex. 1023 at 15 (instituting IPR); “car
`audio/video system,” Ex. 1023 at 16 (instituting IPR); and “device presence signal,” Ex. 1023 at 17 (instituting IPR).
`Nevertheless, to maintain uniformity with the instituted IPR petition upon which this petition is based, Petitioners
`have kept the language of the original petition.
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`8
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`Petitioner submits that a person of ordinary skill in the art at the time of the
`
`alleged invention would have had at least a Bachelor’s degree in electrical
`
`engineering or equivalent science/engineering degree and at least two years of
`
`experience in signal processing and/or electronic system design, or would have at
`
`least four years of experience in signal processing and/or electronic system design.
`
`Ex. 1016 at ¶ 16.
`
`Petitioner further submits that, for purposes of this Inter Partes Review only,
`
`the claim terms are presumed to take on their broadest reasonable interpretation in
`
`light of the specification of the ‘342 patent. Petitioner submits that the following
`
`terms may need to be construed in connection with this Inter Partes Review:
`
`1. “integration subsystem” (all challenged claims)
`
`The term “integration subsystem” itself is not a term recognized by persons
`
`of ordinary skill in the art to have a definite meaning as the name of a structure.
`
`See Williamson, 792 F.3d at 1349; Ex. 1016 at ¶ 74. Nor do claims 49, 73, 97, and
`
`120 include any structural limitations for performing the functions of the
`
`integration subsystem recited. Ex. 1016 at ¶ 74. For example, the term
`
`“subsystem” is used interchangeably in the ‘342 patent with the term “module,”
`
`and amounts to nothing more than a generic nonce word or verbal construct
`
`tantamount to using the term “means.” See, e.g., Ex. 1001 at 5:19, 5:23, 5:29-31,
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`5:40, 5:53, 5:60, and 34:12; see also Williamson, 792 F.3d at 1350 (generic terms
`
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`9
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`such as “mechanism,” “element,” “device,” etc., in claim are tantamount to using
`
`the word “means”). Therefore, the claimed “integration subsystem” is a means-
`
`plus-function claim element that must be construed under 35 U.S.C. § 112, 6th
`
`paragraph. Williamson, 792 F.3d at 1349.
`
`In construing a “means-plus-function” limitation, the function recited in the
`
`limitation must first be identified before a corresponding structure disclosed in the
`
`specification for performing the claimed function is determined. See JVW
`
`Enterprises, Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1330 (Fed. Cir.
`
`2005); see also Chiuminatta Concrete Concepts, Inc. v. Cardinal Indst., Inc., 145
`
`F.3d 1303, 1308 (Fed. Cir. 1998). Claims 49 and 73 essentially recite the same
`
`functions performed by the integration subsystem: (1a) obtaining, using a wireless
`
`communication link, information about an audio file stored (claim 49) or received
`
`(claim 73) on the portable device; (2a) transmitting the information to the car
`
`audio/video system for subsequent display; (3a) instructing the portable device to
`
`play the audio file in response to a user selecting the audio file; and (4a) receiving
`
`audio generated by the portable device over the wireless communication link. Ex.
`
`1016 at ¶ 75.
`
`Meanwhile, the functions of the integration subsystem in claim 97 are: (1b)
`
`channeling audio generated by the portable device to the car audio/video system
`
`using a wireless communication link; (2b) receiving a control command from a
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`10
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`
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`user in a format incompatible with the portable device; (3b) processing the control
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`command into a format compatible with the portable device; and (4b) dispatching
`
`the formatted command to the portable device. Id. at ¶ 76.
`
`The functions of the integration subsystem recited in claim 120 are: (1c)
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`channeling audio generated by the portable device to the car audio/video system
`
`using a wireless communication link; (2c) receiving data from the portable device
`
`in a format incompatible with the car audio/video system; (3c) processing the data
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`into a format compatible with the car audio/video system; and (4c) transmitting the
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`processed data to the car audio/video system. Id. at ¶ 77.
`
`Next, in determining the corresponding structure disclosed in the
`
`specification for performing the identified function(s), the disclosed structure must
`
`be clearly linked with the function(s). See B. Braun Medical Inc., v. Abbott
`
`Laboratories, 124 F.3d 1419, 1424 (Fed. Cir. 1997). In the instant case, the term
`
`“integration subsystem” is first used in the ’342 patent specification in relation to
`
`the embodiments illustrated in FIGS. 18-24. Ex. 1001 at 33:43-38:67 and FIG. 24.
`
`Of note, the specification states, “The integration subsystem 932 contains circuitry
`
`similar to the circuitry disclosed in the various embodiments of the present
`
`invention discussed herein, and could include a PIC16F872 or PIC16F873
`
`microcontroller manufactured by Microchip, Inc. and programmed in accordance
`
`
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`11
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`

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`
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`with the flowchart discussed below with respect to FIG. 24.” Id. at 34:63-35:1; Ex.
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`1016 at ¶ 79.
`
`As can be seen in FIG. 24, many of the above-listed claim functions
`
`respectively correspond to a single step in the flowchart. For example, the
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`“obtaining... information about an audio file” in claims 49 and 73 is encompassed
`
`only by step 1460. Similarly, the “channeling audio generated by the portable
`
`device to the car audio/video system using a wireless communication link” in
`
`claims 97 and 120 is, at most, encompassed only by step 1462. However, a one-
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`step algorithm disclosed in the specification that simply mirrors the claimed
`
`function does not constitute sufficient corresponding structure for a computer-
`
`implemented function recited in a claim. See Encyclopaedia Britannica, Inc. v.
`
`Alpine Elecs., Inc., 355 Fed. Appx. 389, 394- 95 (Fed. Cir. 2009). Accordingly,
`
`the claimed integration subsystem does not have sufficient corresponding structure
`
`disclosed in the specification, and is therefore indefinite under 35 U.S.C. § 112,
`
`2nd paragraph. Id.; see also Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732
`
`F.3d 1376, 1378–81 (Fed. Cir. 2013) (claim indefinite because the specification did
`
`not sufficiently disclose algorithm that explained how to achieve function). Ex.
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`1016 at ¶ 83.
`
`Notwithstanding, to the extent the Board somehow decides that the claimed
`
`integration subsystem is not indefinite, it is noted that a programmed processor is
`
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`12
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`an equivalent to the microcontroller described in the ’342 patent. Id. at ¶ 80.
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`Therefore, although indefinite, the corresponding structure for the “integration
`
`subsystem” of claims 49, 73, 97, and 120 is disclosed as a microcontroller or
`
`processor programmed to perform the method illustrated in FIG. 24. WMS
`
`Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) (for
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`computer-implemented “means-plus-function” limitations, the structure
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`corresponding to the function of the claim limitation includes the algorithm needed
`
`to transform a general purpose computer or processor to a special purpose
`
`computer for performing the function); see also Aristocrat Techs. Austl. Pty Ltd. v.
`
`Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) and Apple Inc. v.
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`Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (the algorithm may be
`
`understood as an outline of an algorithm, a flowchart, or a specific set of
`
`instructions or rules disclosed in the specification); see also Ex. 1016 at ¶¶ 81-84.
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`Furthermore, the specification describes the “integration subsystem” as
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`being positioned within the portable device or within the car audio/video system.
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`See Ex. 1001 at FIGS. 18 and 19, 34:9-13, and 35:23-28. This is consistent with
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`the ’342 patent claims, which further indicate that the “integration subsystem” is
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`located internally within one of the devices to be wirelessly integrated. See, e.g.,
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`id. at claims 2, 26, 50, 74, 98, and 99; Ex. 1016 at ¶ 85.
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`Thus, should the Board decide that “integration subsystem” is not indefinite
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`under 35 U.S.C. § 112, 2nd paragraph, an integration subsystem can best be
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`understood as a microcontroller or processor provided within the portable device or
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`the car audio/video system and programmed to perform the method of FIG. 24; Ex.
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`1016 at ¶ 86.
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`2. “car audio/video system” (all challenged claims)
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`Claim 49, for example, recites “an integration subsystem in communication
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`with a car audio/video system.” Throughout the ’342 patent disclosure, the car
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`audio/video system is continually referred to as a car audio or a car video system.
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`For example, the ‘342 patent discloses that “[t]he present invention relates to a
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`multimedia device integration system. One or more after-market devices, such as a
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`CD player, CD changer, digital media player (e.g., MP3 player, MP4 player, WMV
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`player, Apple iPod, portable media center, or other device), satellite receiver,
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`digital audio broadcast (DAB) receiver, video device (e.g., DVD player), cellular
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`telephone, or the like, can be integrated with an existing car radio or car video
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`device, such as an OEM or after-market car stereo or video system.” Id. at 8:38-46
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`(emphasis added).
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`Accordingly, Petitioner submits that the broadest reasonable interpretation of
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`a “car audio/video system” is “a car audio system, a car video system, or a car
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`audio and video system.” Ex. 1016 at ¶¶ 87-88.
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`3. “device presence signal” (claims 56 and 106)
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`In the New Jersey litigations (see Section II. B), a common Markman
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`decision (Ex. 1007) was issued construing “device presence signal” as used in the
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`related ‘786 patent to be “transmission of a continuous signal indicating an audio
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`device is present.” Ex. 1007 at 14-17. In reaching this interpretation, the district
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`court pointed to the description in the specification of the interface generating a
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`signal “indicating that a CD player/changer is present, and the signal is
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`continuously transmitted to the car stereo.” Ex. 1007 at 14 (citing ’786 Patent at
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`12:29-32, in addition to 13:15-18, 13:62-66, 14:49-51, 15:35-38, 16:12-15, and
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`16:57-60.) Petitioner accepts the court’s interpretation of “device presence signal”
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`should be construed for purposes of this Inter Partes Review only.
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`Beyond these terms, there is no indication in the ‘342 patent that any other
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`term in the challenged claims should be afforded anything other than its plain and
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`ordinary meaning.
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`VII. EFFECTIVE FILING DATE OF ’342 PATENT
`The ’342 patent (Ex. 1001) was filed on June 27, 2006. The application that
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`issued as the ’342 patent, U.S. App. No. 11/475,847 (Ex. 1008, “the ’847
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`application”), was a continuation-in-part (CIP) of Ser. No. 11/071,667 (Ex. 1009,
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`“the ’667 application”), filed March 3, 2005 (abandoned); which was a CIP of Ser.
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`No. 10/732,909 (Ex. 1010, “the ’909 application”) filed December 10, 2003
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`(abandoned); which was a CIP of Ser. No. 10/316,961 (Ex. 1011, “the ’961
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`application”) filed December 11, 2002, now U.S. Pat. No. 7,489,786. See Ex.
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`1001. Ex. 1012 is a copy of the ’342 patent highlighted to show the new matter
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`added at each successive application in the priority chain of the ’342 patent. In Ex.
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`1012, portions highlighted in pink were added in the ’909 application, portions
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`highlighted in blue were added in the ’667 application, and portions highlighted in
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`yellow were added in the ’847 application. Ex. 1016 at ¶ 34.
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`All of the addressed ’342 patent claims are entitled to an earliest effective
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`filing date of June 27, 2006. Blitzsafe did not dispute this position in Plaintiff’s
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`Disclosure of Asserted Claims and Infringement Contentions (Ex. 1013), served in
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`Blitzsafe Texas, LLC v. Toyota Motor Corp. et al., 2:15-cv-01277 (E.D. TX), in
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`which Blitzsafe stated, “Each of the asserted claims of the ’342 patent is entitled to
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`the priority date of U.S. Patent Application No. 11/475,847, filed June 27, 2006,
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`under P.R. 3-1(e).” Ex. 1013 at p. 7.
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`The ’342 patent claims are not entitled to a filing date earlier than June 27,
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`2006 because all of the addressed claims require wireless connectivity between the
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`claimed “integration subsystem” (defined in Section VI above) and a portable
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`audio device, which was not disclosed until the ’847 application. See Ex. 1012. In
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`particular, the ’342 patent claims recite first and second wireless interfaces and an
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`integration subsystem using a wireless link (i.e., wireless functionality), and this
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`wireless functionality via an integration subsystem is not supported until the ’847
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`application, filed June 27, 2006. See Ex. 1012. In addition, the term “integration
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`subsystem” was first introduced in the ’847 application, and its clearly-linked
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`corresponding structure is disclosed with respect to FIG. 24, also first introduced in
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`the ’847 application. Id.; see also Ex. 1016 at ¶¶ 80-84. Thus, the ’342 patent
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`claims should all be afforded an effective filing date no earlier than June 27, 2006.
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`To the extent that “integration subsystem” is not deemed a means-plus-
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`function claim element, the earliest effective filing date should still be no sooner
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`than June 27, 2006 for the reasons set forth herein below. In particular, the ’342
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`patent claims recite first and second wireless interfaces and an integration
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`subsystem using a wireless link (i.e., wireless functionality), and this wireless
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`functionality via an integration subsystem is not supported until the '847
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`application, filed June 27, 2006. See Ex. 1012.
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`Support from the ’961 Application
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`The earliest-filed application of which the ’342 patent claims the benefit, the
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`‘961 application, provides no support for a wireless link, let alone any wireless
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`functionality. See id. Thus, none of the ’342 patent claims is entitled to the 2002
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`filing date of the ‘961 application. Ex. 1016 at ¶ 36.
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`Support from the ’909 Application
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`The next application in the priority chain, the ’909 application filed on
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`December 10, 2003, did not include support for wireless communication with the
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`portable device, or a separate integration subsystem as claimed. Id. at ¶¶ 37-38.
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`No support for “integration subsystem” in ’909 Application
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`The ’909 application does not provide support for “an integration
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`subsystem.” In fact, an integration subsystem is not disclosed and supported until
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`the ’847 application (filed on June 27, 2006) from which the ’342 patent issued.
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`See Ex. 1012.
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`Furthermore, the ’342 patent claims recite first and second wireless
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`interfaces and an integration subsystem using a wireless link (i.e., wireless
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`functionality). See Ex. 1012. Meanwhile, the ’909 application only discloses
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`wireless communication with respect to an integration system that is external to
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`both the car audio/video system and the portable device. See id. at 27:30-45 and
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`FIGS. 8A and 8B. Thus, the ’909 application plainly fails to support the claimed
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`integration subsystem, which is within either of these two devices. Ex. 1016 at
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`¶ 38.
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`No support for wireless communication with portable device in ‘909
`Application
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`The ’909 application included just a few sentences on wireless
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`communication, and those few sentences only dealt with wireless communication
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`between the integration system and the car stereo. The ’909 application had no
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`support for a wireless link between the integration system and the portable device.
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`“Alternatively, the integration system could wirelessly communicate with the car
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`stereo. A transmitter could be used at the integration system to communicate with
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`a receiver at the car stereo. Where automobiles include Bluetooth systems, such
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`systems can be used to communicate with the integration system.” See Ex. 1012 at
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`27:39-45 (emphasis added). The only disclosure of a communications link
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`between the integration system and the portable device in the ’909 application is
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`that of a wired link. See e.g., id. at 27:30-34.
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`This sparse disclosure does not provide support for a wireless link between
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`the integration subsystem and the portable device as required by at least claims 49
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`and 73 (“...establishing a wireless communication link with a second wireless
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`interface in communication with a portable device”) and their dependent claims. If
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`anything, the ’909 application only provides support for: (1) a wireless connection
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`between the car stereo and a standalone integration system; and (2) a wired link
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`between a portable device and the standalone integration system. Thus, an
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`integration subsystem that obtains information about an audio file from a portable
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`device using a wireless link and that receives audio from a portable device using a
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`wireless link, as recited in claims 49 and 73, is plainly unsupported by the ‘909
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`application that discloses only wired connections between an interface and a
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`portable device. See id. at 27:39-45 and FIGS. 8A and 8B; Ex. 1016 at ¶ 37.
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`As set forth above, the ’909 application fails to disclose: (